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  • What’s New In Bad Faith and Why It Matters: Global Perspectives (RECORDING)

    Contains 6 Component(s), Includes Credits

    Bad faith is an ever-evolving doctrine in trademark law, which has seen several recent developments in key jurisdictions for brand owners. This webinar will cover perspectives from the US, China and Europe, with a focus on case studies and practical take-aways.

    Bad faith is an ever-evolving doctrine in trademark law, which has seen several recent developments in key jurisdictions for brand owners. This webinar will cover perspectives from the US, China and Europe, with a focus on case studies and practical take-aways. For Europe, the panel will ask where does repeat filing stand after the Monopoly decision, how is the impact of the Skykick decision on broad specifications being felt, and what other categories of bad faith are emerging? For China, the panel will explain the impact of the changes introduced in the recent 2019 PRC Trademark Law on bad faith applications as well as Chinese government actions to combat bad faith applications, and give some tips on how to prevent bad faith applications effectively. For the US, the panel will discuss concerns about the recent influx of foreign trademark filings at the USPTO, and new procedures for cancelling and expunging fraudulently acquired registrations under the Trademark Modernization Act.

    Nick Aries

    Partner

    Bird & Bird

    Nick Aries is an IP partner with international law firm Bird & Bird. He co-heads the firm's San Francisco representative (non-US law) office, where he advises on EU and UK trade mark, copyright, design, trade secrets matters. Nick also advises on strategy and coordinates IP disputes and litigation outside the US. Being in the US means Nick can be contacted on EU/UK IP matters by US clients and practitioners at a time convenient to them, which makes more frequent interaction on such matters possible. Nick is an Advisory Board member of the SFIPLA, a member of the SVIPLA, and a member of INTA's Enforcement Committee and IPO's European Practice Committee.

    Monica Riva Talley

    Director

    Sterne Kessler Goldstein & Fox

    Monica Riva Talley is a director and heads Sterne Kessler's Trademark & Brand Protection Practice. For over 20 years, she has specialized in strategic trademark counseling and portfolio enhancement, developing anti-counterfeiting solutions and strategies, and resolving trademark disputes. Monica has been consecutively ranked in the World Trademark Review’s WTR 1000 since 2012. She has also been named an "IP Star" by Managing IP magazine since 2013 and is recognized as one of the magazine's "Top 250 Women in IP." Monica is also ranked among the "leading IP practitioners in the world" by the World Intellectual Property Review. She has served in various IPO leadership positions.

    Hong Zheng

    Partner

    Tee & Howe

    Mr. Zheng is a PRC attorney-at-law specialized in the field of IPRs prosecutions and enforcement. Mr. Zheng started his career as an IP lawyer in the leading law firm King & Wood Mallesons in 2003 and joined Tee & Howe Intellectual Property Attorneys in 2007. Mr. Zheng’s areas of practice cover counseling on trademark, domain name, copyright, unfair competition law and patent infringement, including advising on securing and defending IP rights, taking legal actions against bad faith applications, counterfeits and infringing acts, negotiating for acquisition of trademarks, licensing and handling UDRP actions. Mr. Zheng is particularly experienced in the areas of trademark enforcement and litigations and has been representing many well-known brand owners and MNCs in developing their branding strategy and protecting their IPRs in China.

  • Inventor Diversity Part 2: How to Publish Your Inventor Diversity Metrics (RECORDING)

    Contains 5 Component(s), Includes Credits

    This presentation by Carole Boelitz and Jason Friday at Lenovo, moderated by Ahsan Shaikh at McDermott, will discuss the challenges and rewards of taking this bold step into transparency in the diversity in innovation discussion, and what other organizations can do to follow in the Lenovo’s footsteps

    In its 2020 Diversity and Inclusion Report, Lenovo took the book and ground-breaking step of publishing their diversity in innovation metrics including percent of technical roles worldwide held by women and percent of technical roles in the US held by traditionally under-represented racial and ethnic groups.  This presentation by Carole Boelitz and Jason Friday at Lenovo, moderated by Ahsan Shaikh at McDermott, will discuss the challenged and rewards of taking this bold step into transparency in the diversity in innovation discussion, and what other organizations can do to follow in the Lenovo’s footsteps.

    Carole Boelitz

    Executive Director - IP

    Lenovo

    Carole Boelitz is a practicing corporate and patent attorney with experience in all aspects of intellectual property protection and strategy and law, including patents, trademarks, copyright, and trade secrets and addressing issues regarding patentability analysis, drafting, filing, patent prosecution, transactions, standards, cease and desist issues, indemnification, due diligence, trademark and patent infringement analysis, design arounds, right to market clearances, competitive landscapes, and requests to license.

    Jason Friday

    IP Counsel

    Lenovo

    Jason Friday is Senior IP Counsel at Lenovo, where he has been for over 4 years. Previously, Jason was an Associate with Kilpatrick Townsend & Stockton and before that, he was Senior Associate with Alston & Bird. Jason received his law degree from The George Washington University and attended undergrad at Clemson University.

    Ahsan Shaikh

    Partner

    McDermott Will & Emery

    Ahsan Shaikh serves as the head of McDermott’s Patent Prosecution practice. He focuses his practice on strategic patent portfolio management and client counseling for computer-related technology companies. Ahsan actively promotes corporate and innovation diversity. In his work within and outside the Firm, Ahsan focuses on helping combat the gender, racial, and ethnic disparity in patent application filings and issuances within organizations, increasing potential innovation output. To support these efforts, Ahsan serves as part of a team at the Intellectual Property Owners Association (IPO) developing a toolkit to better engage women inventors, and is currently working with Facebook to improve its diversity in innovation program to better engage more diverse employees in the patenting process.

  • Hybrid, Remote and Post-Pandemic (Eventually!) Return to In-Person Work Arrangements: A Panel Discussion on Key Topics for Those with Disabilities (RECORDING)

    Contains 2 Component(s)

    With the pandemic, remote and hybrid work arrangements, including for IP lawyers, has proliferated. As we look ahead to re-entry after the pandemic – even if delayed – it appears that such arrangements will continue, at least to some degree, alongside in-person arrangements. This virtual panel discussion will cover topics relating to the various work arrangements, with a focus on those with disabilities.

    With the pandemic, remote and hybrid work arrangements, including for IP lawyers, has proliferated.  As we look ahead to re-entry after the pandemic – even if delayed – it appears that such arrangements will continue, at least to some degree, alongside in-person arrangements. This virtual panel discussion will cover topics relating to the various work arrangements, with a focus on those with disabilities.

    *Please note that there will be no CLE offered for this program.*

    Rebecca Dobbs Bush

    Partner

    SmithAmundsen

    Rebecca Dobbs Bush, a former human resources consultant that worked with a variety of businesses in different industries, has a unique understanding of the legal landmines her clients face every day. Rebecca thoughtfully and skillfully provides management with advice and counsel in human resource matters, wage and hour issues, employee benefit compliance and employment litigation. When Rebecca advises on difficult matters relating to compliance with ERISA and the tax code, she is able to consolidate the complexities of compliance into understandable and practical advice and guidance.

    Deborah Foster

    Professor of Employment Relations and Diversity

    Cardiff Business School

    With a disciplinary background in Sociology (B.A Lancaster; PhD Bath) Professor Foster's research encompasses employment relations and workplace equality and diversity.  Past projects examined the impact of marketisation on public service trade unions and industrial relations; gender and management in China and Taiwan and the negotiation of disability adjustments in the workplace by disabled people and trade union representatives.

    Mercedes Meyer

    Partner

    Faegre Drinker Biddle & Reath, LLP

    Mercedes K. Meyer, Ph.D., is a partner in the Intellectual Property Group of Faegre Drinker Biddle & Reath, LLP’s Washington, DC office. She earned her bachelor's degree in chemistry from Bryn Mawr College (1988), her Ph.D. in virology from the University of Texas Graduate School of Biomedical Sciences at Houston and The University of Texas M.D. Anderson Cancer Center (1994), and her J.D. from the University of Houston Law Center (1996). Mercedes is co-author with Professor David Hricik of Patent Ethics: Prosecution (4th ed., 2016-2017). She has lectured in the past on bioethics, ethics, and patents especially in the areas of biotechnology, due diligence, prosecution, and inter partes matters. Mercedes is an active member of IPO and a member of IPO's Education Foundation board of directors.

    Thomas J. Pienkos

    Partner

    SmithAmundsen

    Tom Pienkos counsels clients on the strategic protection, licensing and enforcement of intellectual property rights both domestically and abroad. His experience includes preparing and prosecuting many U.S. and international patent applications and securing patent rights for clients in relation to a wide variety of technologies, including engine, construction, printing, commercial and residential heating and cooling, and computer-related technologies. Tom has supervised and conducted intellectual property due diligence investigations for corporate mergers, acquisitions and re-financings. He also drafts and negotiates patent license, nondisclosure and joint development agreements.

    As a member of the firm’s Intellectual Property Practice Group, Tom represents clients in a range of industries, including transportation, commercial and residential kitchen and washroom, technologies, and industrial manufacturing. Tom leads and enjoys participating in patent review committees charged with strategically evaluating inventions for possible patent prosecution.  He advises clients on policing and protecting copyright, trade dress, trade secret and trademark rights. 

  • Approaches to Arbitration and Mediation, with a Focus on the U.S. and China (RECORDING)

    Contains 7 Component(s), Includes Credits

    This joint webinar will provide an overview of arbitration and mediation of IP disputes. Speakers from private practice in the U.S. and China will discuss mechanisms, experiences, and insights for requesting and conducting alternative dispute resolution in their respective countries. In addition, a WIPO official will join the panel to discuss the details of using the WIPO Arbitration and Mediation Center as a venue to resolve disputes.

    IPO has long held an annual Innovation Dialogue with government entities and our counterparts in China. CCPIT (the China Council for the Promotion of International Trade) has worked with IPO to help facilitate this Dialogue. Now, the two organizations have come together to organize a virtual discussion about arbitration and mediation with a focus on the U.S. and China.

    This joint webinar will provide an overview of arbitration and mediation of IP disputes. Speakers from private practice in the U.S. and China will discuss mechanisms, experiences, and insights for requesting and conducting alternative dispute resolution in their respective countries. In addition, a WIPO official will join the panel to discuss the details of using the WIPO Arbitration and Mediation Center as a venue to resolve disputes.

    There will be ample time provided for your questions. Please join us for what is sure to be an insightful webinar on this interesting topic.

    Ignacio de Castro

    Director - IP Disputes and External Relations Division - WIPO Arbitration and Mediation Center, Geneva, Switzerland

    WIPO

    Ignacio De Castro is a Spanish lawyer and an English solicitor. Ignacio holds an LL.M. degree from King's College London. Before joining WIPO in 2002, he practiced with the law firms Baker & McKenzie, London and Freshfields Bruckhaus Deringer, London in the areas of international arbitration and litigation.  Ignacio is responsible for the administration of mediation, arbitration and expert determination cases filed with the WIPO Arbitration and Mediation Center and the development and promotion of WIPO alternative dispute resolution (ADR). This includes implementing ADR collaborations concluded with IP Offices and establishing alternative dispute resolution (ADR) procedures adapted to specific areas of intellectual property.

    Frank Gao

    Patent Attorney & Chemist

    Ladas & Parry LLP

    Frank Gao is a registered patent attorney and chemist. Prior to joining Ladas & ParryLLP,  Mr. Gao worked for another prominent Chicago patent law firm and hewas in-house patent counsel at Sandvik. Before Sandvik, he was a patentagent/attorney at a law firm in California. Before entering law school, Mr. Gaoworked at Chemical Abstracts Service (CAS) editorial division, where heanalyzed and built database entries for patents in fields of pharmaceuticals,polymer, and material science. Mr. Gao also worked at Princeton Biomoleculeswhere he synthesized customized peptides via solid-state synthesis. Frank is anative Mandarin Speaker and obtained undergraduate and graduate degrees inChina, a Ph.D. student at Weizmann Institute of Science in Israel and alsoan Ohio state University graduate as well. Frank Gao is a Lanham ActMediator before United District Court of Northern District of Illinois. 

    Wang Zhengzhi

    IP Attorney

    Globe-Law

    Mr. Wang Zhengzhi, an IP attorney, is the Founding Partner at Beijing Globe-Law Law Firm (Globe-Law), Arbitrator at China International Economic and Trade Arbitration Commission (CIETAC)/Beijing Arbitration Commission (BAC)/World Intellectual Property Organization (WIPO) and Singapore International Arbitration Centre (SIAC). He is the Chair of Intellectual Property Committee of All China Lawyers Association (ACLA). He has published Intellectual Property Rights of China Time-Honored Brands, China's Intellectual Property Index (publication series, the 11th version has been published). Mr. Wang has hosted Top Ten National IP Case (Copyright of Network Plug Case), Beijing Top 10  foreign merchant IP Protection Case (Case of World Executives’ Trademark and trade name Conflict), and 2013/2017 50 Classic IP Cases of the Supreme Court of China. He serves as the member of the drafting group of Patent Law Fourth Amendment (in charge of patent administrative protection) and member of the drafting group synchronizing the coverage of the two laws at office of cracking down counterfeit and infringement.

  • How to Avoid Common IP Pitfalls in Energy Industry Joint Ventures and Collaborations (RECORDING)

    Contains 8 Component(s), Includes Credits

    Joint ventures (JVs) and other collaborations are becoming increasingly important across the energy sector. They can help lower costs, spread risk, meet technical challenges, open new markets, and navigate ongoing price volatility. But JVs and other collaborations also create many potential pitfalls for your IP portfolio.

    Joint ventures (JVs) and other collaborations are becoming increasingly important across the energy sector. They can help lower costs, spread risk, meet technical challenges, open new markets, and navigate ongoing price volatility. But JVs and other collaborations also create many potential pitfalls for your IP portfolio.

    Panelists will discuss practical tips for avoiding common IP pitfalls, including:

    • What due diligence should you perform before teaming up with another company (or even an industry competitor)?
    • What is the best way to define the scope of your rights and document your company’s IP contributions to the JV or collaboration?
    • Special considerations for protecting trade secrets, know-how, and data;
    • Ownership considerations for any jointly owned IP created during the course of the collaboration; and
    • Thinking ahead to the conclusion of the collaboration.

    Charles Collins-Chase

    Partner

    Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

    Charles Collins-Chase, a partner in Finnegan, Henderson, Farabow, Garrett, & Dunner, LLP’s Washington, D.C. office, focuses on district court patent litigation and appeals before the U.S. Court of Appeals for the Federal Circuit, where he served as a clerk. He uses his chemical engineering background to help clients protect innovations in pharmaceuticals and biotechnology, energy and renewables, and chemical products. He has assisted numerous clients in Hatch-Waxman (ANDA) litigation.

    Pamela McCollough

    Associate Counsel

    Shell Oil Company

    Pam McCollough holds a J.D. degree from The University of Houston Law Center and a B.S. degree in Chemistry and English from The University of Alabama. She is licensed to practice law in Texas and is also registered to practice before the USPTO. Pam began her career as a chemist at Texaco while attending law school.  Following law school, she joined Shell where she has provided a broad range of intellectual property counsel to Shell’s upstream, downstream, and integrated gas businesses for more than thirty-five years.  Pam’s current practice is focused on strategic projects and IP agreement and transactional support to Shell’s renewables and energy solutions business. 

    KaRan Reed

    Assistant General Counsel

    BP America, Inc.

    KaRan Reed is based in Houston, TX and has been licensed to practice law for over 20 years. She is BP's Assistant General Counsel and attended the University of Houston Law Center.

  • Announcing the Re-Launch of the Diversity in Innovation Law Firm Toolkit (RECORDING)

    Contains 5 Component(s), Includes Credits

    The Diverse Inventors subcommittee of the Women in IP Committee is proud to launch a new and updated Law Firm Toolkit that assists legal professionals in law firms to team with their corporate and university clients to increase the diversity in in the innovation ecosphere of the their clients.  The panel will walk through the updated toolkit, how to use it, and discuss practical ways for in-house and outside counsel to partner to use the toolkit.

    The Diverse Inventors subcommittee of the Women in IP Committee is proud to launch a new and updated Law Firm Toolkit that assists legal professionals in law firms to team with their corporate and university clients to increase the diversity in in the innovation ecosphere of the their clients.  The panel will walk through the updated toolkit, how to use it, and discuss practical ways for in-house and outside counsel to partner to use the toolkit. 

    Tina Dorr

    Partner

    Cantor Colburn LLP

    Tina Dorr represents clients in a large range of technology areas, including chemical, material, life science, mechanical, and semiconductor technologies, as well as fiber and fiber composite technologies for consumer product applications, geotextile applications, and aerospace applications. Tina drafts and prosecutes U.S. utility, design, and plant patent applications, as well as manages and directs prosecution of foreign patent portfolios. She provides opinions, performs searches, counsels clients to develop effective worldwide patent protection, and provides technical support and opinions to Cantor Colburn’s Litigation Department in Abbreviated New Drug Application litigation. Prior to joining Cantor Colburn, Tina completed her doctoral thesis on enzyme catalysis, membrane protein structure, and redox chemistry.  She is also an active leader in the local and national IP community, currently serving as IPO's Co-Vice-Chair of the Next Generation Leaders Committee.

    Liam Evans

    Patent Agent

    Cantor Colburn LLP

    Liam Evans is a patent agent focusing on the fields of materials science and polymers, specifically on matters related to chemical engineering, nanomaterials, bioimaging, and soil polymers. Before joining Cantor Colburn, Liam’s undergraduate research in the Institute of Materials Science at the University of Connecticut focused on developing a nanodisc platform for drug delivery and bioimaging applications.

    Krista Kostiew

    Senior Patent Counsel

    Unilever

    Krista Kostiew is an Experienced Senior Patent Counsel with a demonstrated history of working in the consumer goods industry. Skilled in Patent Prosecution, Freedom to Operate (FTO), Patent Portfolio Analysis, Patent Law, Technology Transfer, NDA/CDAs, and Intellectual Property. She is a strong patent professional with a Juris Doctor (J.D.) from UNH School of Law.

    Carolyn Powell

    Associate

    Dinsmore & Shohl LLP

    Carolyn Powell is admitted to practice before the U.S. Patent and Trademark Office and has experience preparing and prosecuting U.S. and foreign patent applications in many technical areas, with a specialty in petroleum engineering. Prior to joining Dinsmore, she graduated from The Ohio State University Moritz College of Law. She now assists clients in all areas of intellectual property law, including patentability searches and opinions, patent application preparation and prosecution, patent infringement studies and opinions, and patent maintenance and enforcement.

    Claudia Stangle

    Partner

    Leydig, Voit & Mayer, LTD.

    Claudia Stangle is a partner in Chicago with over 20 years of experience and specializes in trademarks, trade dress, copyrights, false and comparative advertising, Internet law (including cybersquatting and domain name disputes), trade secrets, trademark and copyright licensing, right of publicity/privacy, and trademark acquisitions and divestitures.  Ms. Stangle has significant experience in complex inter partes proceedings before the Trademark Trial and Appeal Board (TTAB), has represented clients in federal courts around the U.S., and has won over fifty ICANN proceedings relating to domain name dispute matters for her clients.  She also has experience in patent infringement and trade secret litigation.  In addition to her litigation and dispute practice, Ms. Stangle has extensive experience in trademark counseling.  She has counseled clients by providing search advice and protectability opinions regarding domestic and global trademark availability.

    Meredith Struby

    Managing Partner and Principal

    Meunier Carlin & Curfman LLC

    Meredith Struby helps her clients channel the potential of their IP assets. Her clients trust her to understand their technology and business needs and to use her deep understanding of patent law and practice to protect and manage their IP assets. She has a sharp sense for seeing opportunities and a unique ability to clarify complex issues, providing insightful counseling. She digs in to do what is needed while her forthright and humorous approach make it enjoyable for clients to work with her side-by-side to meet their business goals. She leads client-focused teams of attorneys, patent agents, paralegals, and staff by channeling and maximizing the strengths of each team member and encouraging the culture of service and support at MCC. She and her teams embrace the firm’s motto – value without compromise – delivering top notch legal services with a fee structure that allows for her and other experienced attorneys to have substantive involvement with clients’ portfolios and intellectual property strategies.

  • Introduction to Diversity & Inclusion Practical Guide 3.0: Part 1 (RECORDING)

    Contains 5 Component(s), Includes Credits

    IPO’s Diversity & Inclusion committee is excited to announce the launch of the newest version 3.0 of its Practical Guide to Diversity & Inclusion in the Legal Profession. This new version is being released in easily digestible sections with accompanying webinars. The first webinar introducing Section 101 of the Guide is scheduled for July 20. This webinar will cover the basics of Diversity & Inclusion within the legal profession - especially the IP profession. Additional webinars discussing additional sections of the Guide will be announced in the coming weeks. 

    IPO’s Diversity & Inclusion committee is excited to announce the launch of the newest version 3.0 of its Practical Guide to Diversity & Inclusion in the Legal Profession. This new version is being released in easily digestible sections with accompanying webinars. The first webinar introducing Section 101 of the Guide is scheduled for July 20. This webinar will cover the basics of Diversity & Inclusion within the legal profession - especially the IP profession. Additional webinars discussing additional sections of the Guide will be announced in the coming weeks.

    Rachael Rodman (Moderator)

    Partner

    Ulmer & Berne, LLP

    Rachael Rodman is an accomplished litigator who concentrates her practice in the area of IP litigation, and has experience representing clients in variety of cases involving patent, trademark, copyright, and trade secret claims. She also has experience in complex business litigation, and has litigated cases involving contract, shareholder, and non-compete disputes. In addition to her substantial trial experience in state and federal court, Rachael has extensive appellate experience, in both Ohio and federal appellate courts. Prior to beginning her litigation practice, Rachael clerked for the Ohio Court of Appeals for the Second Appellate District.  She has participated in arbitrations through the American Arbitration Association and the dispute resolution forums of the Financial Industry Regulatory Authority and the American Health Lawyers Association.

    Serena Farquharson-Torres

    Senior Counsel

    Bristol-Meyers Squibb Company

    Serena Farquharson-Torres is senior counsel at Bristol-Myers Squibb Company where she is responsible for all aspects of patent procurement, counseling, due diligence, litigation and policy. She is located in Lawrenceville, NJ. Serena is focused on the global protection of the company’s innovation and brands. Serena works closely with R&D, manufacturing, and business colleagues to ensure meaningful exclusivity and freedom of operation for BMS products. Serena is also passionate about diversity and inclusion issues and is part of IPO’s Women in IP Committee and Diversity task force as well as the Diversity & Inclusion team of BMS legal department. Prior to joining BMS in 2016, Serena was Senior Counsel at Sanofi, Schering-Plough Corporation and in private practice. Serena has a B.S. in Chemistry from Howard University, Ph.D. in Biological Chemistry from the University of Minnesota and a J.D., from the University of North Carolina School of Law. Serena has frequently presented on IP topics on behalf of law associations and industry groups.

    Gloria Fuentes

    Vice President & Assistant General Counsel

    Bristol-Meyers Squibb Company

    Gloria Fuentes is Vice President & Assistant General Counsel for Bristol-Meyers Squibb. Previously, Gloria worked at Schering-Plough, Inc. (2006-2009), Ropes & Gray LLP (1999-2002) and Fish & Neave LLP (2002-2006). Most recently, Gloria was with Merck. Gloria has a J.D. from Columbia University, a Ph.D. from the University of Rochester and a B.S. from Cornell University. 

    Elaine Spector

    Partner

    Harrity & Harrity, LLP

    Elaine Spector is a patent attorney with over 20 years of experience in intellectual property law.  Her current practice consists primarily of prosecuting patent applications with a focus on electromechanical technologies. Prior to joining Harrity & Harrity, Elaine worked in private practice for over 15 years handling various intellectual property matters, including patent application drafting and prosecution, trademark prosecution and enforcement, as well as litigating complex patent cases in federal courts. Elaine’s extensive litigation experience provides her with a unique perspective in prosecuting patent applications.

    Claudia Stangle

    Partner

    Leydig, Voit & Mayer, LTD.

    Claudia Stangle is a partner in Chicago with over 20 years of experience and specializes in trademarks, trade dress, copyrights, false and comparative advertising, Internet law (including cybersquatting and domain name disputes), trade secrets, trademark and copyright licensing, right of publicity/privacy, and trademark acquisitions and divestitures.  Ms. Stangle has significant experience in complex inter partes proceedings before the Trademark Trial and Appeal Board (TTAB), has represented clients in federal courts around the U.S., and has won over fifty ICANN proceedings relating to domain name dispute matters for her clients.  She also has experience in patent infringement and trade secret litigation.  In addition to her litigation and dispute practice, Ms. Stangle has extensive experience in trademark counseling.  She has counseled clients by providing search advice and protectability opinions regarding domestic and global trademark availability.

  • IP Case Law Mid Year Review (RECORDING)

    Contains 8 Component(s), Includes Credits

    This webinar will provide a roundup of this year’s most significant intellectual property cases. Our panelists are three litigators in private practice, all members of IPO’s Amicus Brief Committee. They will review the most significant decisions as of June 30 and give a sneak peek at coming attractions.

    2021 has been an active year for IP cases so far. The U.S. Supreme Court Supreme Court tackled THREE blockbuster cases: United States v. ArthrexGoogle v. Oracle, and Minerva v. Hologic. And while perhaps not issuing any blockbuster opinions, the Federal Circuit provided the IP law mill with some additional grist.   

    In Yu v. Apple, the Federal Circuit continued down the path of its prior decisions in Chamberlain and American Axle holding a patent on a tangible object to be ineligible subject matter. In Mylan v. Janssen, the Federal Circuit held that the USPTO Director’s exercise of discretion to deny institution of inter partes review is unreviewable. On the trademark side, Authentic Apparel v. United States involved a trademark license dispute, and QuikTrip West v. Weigel clarified likelihood of confusion analysis. 

    This webinar will provide a roundup of this year’s most significant intellectual property cases. Our panelists are three litigators in private practice, all members of IPO’s Amicus Brief Committee. They will review the most significant decisions as of June 30 and give a sneak peek at coming attractions.

    Paul Berghoff

    Founder

    McDonnell Boehnen Hulbert & Berghoff LLP

    Paul Berghoff, founder of McDonnell Boehnen Hulbert Berghoff LLP, has three decades of experience as lead trial counsel in complex patent litigation – both jury and bench trials and PTAB proceedings – concentrating in litigation involving pharmaceuticals, medical devices, biotechnology, electronics, and software. He has successfully tried scores of patent cases and has successfully argued dozens of times before he US Court of Appeals for the Federal Circuit. He services as Chair of the firm’s Litigation & Appeals Practice Group.  He is Vice-Chair of IPO’s Amicus Brief Committee.

    Gregory Castanias

    Partner

    Jones Day

    Greg Castanias is a partner at Jones Day in Washington, DC. He is head of the firm’s Federal Circuit team and has almost 30 years’ experience as a leading appellate and intellectual property litigator. His experience includes five US Supreme Court arguments, 70+ Federal Circuit arguments, and countless others in federal and state courts across the nation, from Alaska to Connecticut. His intellectual property experience includes such diverse technologies as genetics, diagnostics, pharmaceuticals, chemistry, electronics, and mechanical fields, as well as copyright, trademark, and trade secret disputes. He is Vice-Chair of IPO’s Amicus Brief Committee.

    Wendy Larson

    Trademark Attorney

    Pirkey Barber

    Wendy Larson practices trademark law with a focus on litigation. She focuses specifically on issues relating to the internet, including cybersquatting and brand protection challenges involving social media platforms and smartphone applications, keyword advertising, service provider liability, and personal jurisdiction relating to foreign online actors. She practices in federal court, before the Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB), and with dispute resolution service providers such as the Forum and the World Intellectual Property Organization (WIPO) handling domain name disputes under ICANN’s domain name dispute resolution policies. Wendy also assists clients in a variety of prosecution and other litigation matters. Wendy is a member of IPO’s Amicus Brief Committee.

  • Waiving IP Protections to Address COVID-19: The WTO Proposals and Ensuring Equitable Access to the Vaccines (RECORDING)

    Contains 8 Component(s), Includes Credits

    This webinar will share information about the status of the various TRIPS waiver proposals, the logistics of negotiations at the WTO, and the roles of various U.S. governmental and international agencies. Our esteemed panel will discuss questions such as whether a waiver would actually increase access to vaccines and other technologies, the impact of a waiver on innovation, impediments to ensuring broader vaccine access, and the effectiveness of ongoing voluntary efforts to distribute the vaccine and other important technologies more widely.

    Last year India and South Africa proposed to the World Trade Organization’s Council for Trade-Related Aspects of Intellectual Property Rights to “a waiver from the implementation, application and enforcement” of “intellectual property rights such as patents, industrial designs, copyright and protection of undisclosed information” under the TRIPS agreement related “to prevention, containment or treatment” of COVID-19. The proposal sparked a global debate about whether the waiver is an effective means to address the vaccine shortage or instead inaccurately portrays IP as a barrier to rapid innovation, R&D collaboration, and ample manufacturing of COVID-19 technologies.

    The U.S. initially opposed the proposal, but in 2021 U.S. Trade Representative KATHERINE TAI announced U.S. support for “waiving intellectual property protections for COVID-19 vaccines.” In May, several countries and delegations including India and South Africa circulated a revised proposal that would apply to “health products and technologies including diagnostics, therapeutics, vaccines, medical devices, personal protective equipment, their materials or components, and their methods and means of manufacture for the prevention, treatment or containment of COVID-19.” The revision also proposes that the waiver remain in effect for three years after adoption unless the General Council determines that “exceptional circumstances” justify extending the waiver.

    Then, in June, the European Union sent communications to the WTO General Council and to the WTO TRIPS Council regarding increasing the global supply of COVID-19 vaccines , which were intended to provide an alternative to the waiver proposal.  The EU says waiving IP protections would not increase the supply of or equitable access to vaccines. It instead recommends that the WTO agree on a global initiative to minimize export restrictions, encourage voluntary license agreements between vaccine developers and manufacturers in developing countries, and clarify existing provisions in the TRIPS agreement that already permit limited compulsory licenses.

    The TRIPS Council will engage in text-based negotiations about the proposed waiver over the coming months. This webinar will share information about the status of the various proposals, the logistics of negotiations at the WTO, and the roles of various U.S. governmental and international agencies. Our esteemed panel will discuss questions such as whether a waiver would actually increase access to vaccines and other technologies, the impact of a waiver on innovation, impediments to ensuring broader vaccine access, and the effectiveness of ongoing voluntary efforts to distribute the vaccine and other important technologies more widely.

    Tanuja Garde

    Corporate Vice President, Intellectual Property & Licensing

    Raytheon Technologies

    TanujaGarde is Raytheon Technologies’ CorporateVice President, Intellectual Property & Licensing and has held thisposition since April 2020. Prior to this position, she held IP leadership rolesin other large companies. She also served in the US Government as the DeputyAssistant USTR for IP and Innovation, where she was the lead negotiator inseveral bilateral and multilateral IP and trade negotiations. Prior to her workin the government, Tanuja worked at large international law firms and alsotaught and conducted research in international and comparative patent law atthe University of London's Queen Mary IP Research Institute, where she held aHerschel Smith Research Fellowship, as well as at the Max Planck Institute forInnovation and Competition, where she was the head of the US Department. Tanujais a graduate of Duke University (with Distinction in Chemistry) and WashingtonUniversity School of Law.

    David Kappos

    Partner

    Cravath, Swaine & Moore LLP

    David J. Kappos is widely recognized as one of the world’s foremost leaders in the field of intellectual property, including intellectual property management and strategy, the development of global intellectual property norms, laws and practices as well as commercialization and enforcement of innovation‑based assets. Mr. Kappos supports the Firm’s clients with a wide range of their most complex intellectual property issues, including those pertaining to blockchain and financial technology (FinTech) as well as data security and privacy.

    James Pooley

    Trade Secret Expert & Attorney

    James Pooley, PLC

    James Pooley founded his own firm in Silicon Valley in 2015, after serving for five years as the Deputy Director General of the World Intellectual Property Organization. His legal treatise, “Trade Secrets,” is updated semi-annually. He acts as co-counsel in trade secret and patent litigation, and acts as consultant regarding trade secret and cybersecurity risks. Earlier he was an IP litigator and partner at Morrison & Foerster and Milbank, among other firms. He is also the author of Secrets: Managing Information Assets in the Age of Cyberespionage. 

    Tony Rollins

    European Patent Attorney

    Rollins IP Strategies Ltd.

    Tony Rollins of Rollins IP Strategies Ltd. is an experienced IP practitioner who is based in the United Kingdom. At the Wellcome Foundation, he handled a diverse range of work in the pharmaceutical, diagnostic, animal health, environmental health and hygiene areas. He later served as Vice President of Intellectual Property of Amersham plc, headed up the European Patents group of MSD, and also led MSD’s Japanese patent department. Tony is the current chair of the International Liaison Committee and the former President of the Chartered Institute of Patent Attorneys. He is President of the Global Network of National IP Practitioner Associations.

  • The Impact of the Brazilian Supreme Court Decision on the Patent Term (RECORDING)

    Contains 8 Component(s), Includes Credits

    In May, the Brazilian Supreme Court issued a landmark decision declaring unconstitutional the 10-year minimum patent term guarantee. The decision impacts more than 30,000 pending patent applications and patents. In addition, the Supreme Court ruled that the decision applies retroactively to pharmaceuticals and medical device patents. Brazilian Patent and Trademark Office (BRPTO) is already notifying patent holders of the reduction of the patent term in each affected patent. The Supreme Court decision represents a major change in the Brazilian Patent System.

    In May, the Brazilian Supreme Court issued a landmark decision declaring unconstitutional the 10-year minimum patent term guarantee. The decision impacts more than 30,000 pending patent applications and patents. In addition, the Supreme Court ruled that the decision applies retroactively to pharmaceuticals and medical device patents. Brazilian Patent and Trademark Office (BRPTO) is already notifying patent holders of the reduction of the patent term in each affected patent. The Supreme Court decision represents a major change in the Brazilian Patent System.

    Please join us as we cover a variety of topics relating to the Supreme Court decision, including:

    • • The decision in a nutshell, highlighting the main conclusions;
    • • Practical aspects for applicants and patent holders considering the new patent term regime in Brazil.  

    Isabelle Clauss

    Senior Corporate Counsel - Patents

    Bristol-Meyers Squibb Company

    Isabelle Clauss is a Senior Corporate Counsel at Bristol-Myers Squibb where she focusses on patent and regulatory exclusivities of biological assets and cell therapy.  As part of her role, Isabelle serves as regional IP counsel for Latin America including Brazil.

    Roberto Rodrigues

    Partner

    Licks Attorneys

    Roberto Rodrigues is an experienced lawyer representing industry leading companies in patent litigation matters and patent oppositions.  Roberto has worked on the most high profile trials in patent matters in Brazil. Additionally, he advises companies on issues related to cybersecurity and antitrust. Roberto earned an LLM from Stanford Law School, where he was Lead Editor of the Stanford Technology Law Review. Roberto joined Licks again in 2019 after working at Quinn Emanuel Urquhart & Sullivan, LLP in New York City. He has also published articles in technology law journals around the world.

    R. Craig Tucker

    Patent Counsel

    Eli Lilly and Co.

    R. Craig Tucker has been a patent attorney with Eli Lilly and Company for 21 years where he has been involved in global patent procurement, portfolio management, international IP enforcement and IP Law advocacy.  An active member of various national and international IP Law associations, Craig has been an advocate for the equitable development of IP law globally.  Craig has a Masters of Biology/Biophysics from Purdue University (’90), and a J.D. from Indiana University School of Law, Indianapolis (’98), and 6 years of experience in bioanalytical assay development prior to entering the practice of IP law.